Case Number: D2020-2891
Complainant: Jordi Vilanova
Represented by: Mapa Trademarks SL
In a split finding, a three-member panel of the World Intellectual Property Organization has found a complainant from Spain guilty of attempted Reverse Domain Name Hijacking for his effort to acquire the domain, cloudtango.com, from HugeDomains.com, an aftermarket domain-name retailer, using the UDRP process. Mr. Jordi Vilanova was represented by Mapa Trademarks SL; HugeDomains.com was represented internally.
Ultimately, the panel concluded a single element doomed the complaint to failure, which was the domain was transferred to HugeDomains.com two months before the complainant began using the ‘cloud tango’ mark on another domain, cloudtango.org. Two panelists agreed on the RDNH finding, while one dissented.
In the majority opinion, the panel chided the complainant and their attorneys for failing to assert both registration and use in bad faith, the stare decisis for which the panel observed has been well settled. ”It has been clearly established that a complaint in such circumstances must fail unless the complainant can show the respondent has somehow opportunistically taken advantage of the complainant’s plans to adopt a trademark which the domain name in question resembles,” the panel wrote.
“It has also been clearly established under the Policy for many years now that a complainant must prove both registration in bad faith and use of the domain name in bad faith.”
“The Complaint does not attempt to address either of these matters,” the panelists wrote.